Appeal No. 2004-0140
Application No. 10/154,729
Owens, Administrative Patent Judge, dissenting.
The examiner argues that “[n]owhere does the provisional application ever
disclose or lead a skilled artisan to first bonding the first and second metallic
materials and then, after bonding, machining the bonded materials to form a cup-
shaped assembly” (final rejection mailed March 3, 2003, paper no. 8, page 6), and
that “[i]n all situations disclosed in said provisional application, forming occurs
before bonding, and there is nothing in said provisional application that would have
lead [sic] a skilled artisan to perform the bonding step before the forming step”
(answer, page 5). These arguments indicate that the alleged deficiency in the
appellants’ provisional application is that it does not provide adequate written
descriptive support under 35 U.S.C. § 112, first paragraph, for the claimed
invention.
Regarding the written description requirement of 35 U.S.C. § 112, first
paragraph, the Federal Circuit has stated that “[t]he test to determine if an
application is to receive the benefit of an earlier filed application is whether a
person of ordinary skill in the art would recognize that the applicant possessed what
is claimed in the later filed application as of the filing date of the earlier filed
application.” Noelle v. Lederman, 355 F.3d 1343, 1348, 69 USPQ2d 1508, 1513
(Fed. Cir. 2004). A predecessor of the Federal Circuit stated that it cannot agree
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